Patent statements related to XHTML+Voice 1.1

IBM (with permission of Arnaud Le Hors)

On behalf of IBM I'm happy to inform you that the IPR statement we've made
on September 16 2002 regarding HTML+Voice Profile 1.0 and which is recorded
at: http://lists.w3.org/Archives/Member/patent-issues/2002JulSep/0025.html
equally applies to the version 1.1 of this specification that we published
on January 28th, 2003 at:
http://www.ibm.com/software/pervasive/multimodal/x%2Bv/11/spec.htm

Original statement:

Following is a revision of IBM's Intellectual Property disclosure regarding
the XHTML+Voice Profile Specification [1] that was Submitted on November,
30th 2001 [2].
[1] http://www.w3.org/TR/xhtml+voice/
[2] http://www.w3.org/Submission/2001/13/
IBM W3C Multimodal Interaction Working Group X+V Specification Intellectual
Property Disclosure
September 16, 2002
IBM, as a W3C Multimodal Interaction Working Group participant, supports a
full disclosure policy for potentially essential published patent
applications and issued patents, and an acknowledgement policy for
potentially essential unpublished patent applications. Under the charter
of the W3C Multimodal Interaction Working Group, the intellectual property
commitment is to disclose patents that are personally known (or become
known) to representatives in the working group and / or the Advisory
Committee representative; and at the time of disclosure, the licensing
terms are to be made known.
The following IBM intellectual property disclosure is based upon the
working knowledge of those individuals involved with the Multimodal
Interaction Working Group and upon the working knowledge of individuals
coordinated though normal Advisory Committee Representative communications,
who may have knowledge of XHTML+Voice Profile essential claims. These
disclosures do not represent the results of a complete IBM patent portfolio
search. This approach for identifying XHTML+Voice Profile essential claims
is in accordance with current W3C Intellectual Property policy guidelines.
The following disclosure information is provided based upon the current
understanding and assessment of how the XHTML+Voice Profile specification
is expected to evolve and how the resulting W3C specification would be
dependent upon IBM intellectual property.
At this time, IBM does not believe that there exist issued patents or
patent applications (published or unpublished), within IBM's portfolio and
which IBM would have the ability to license, that may contain claims, which
would be essential in the implementation of the XHTML+Voice Profile
specification. Should IBM determine that there are claims within its
portfolio, which would be considered essential for a compliant
implementation of the XHTML+Voice Profile specification, these claims will
be licensed under Royalty Free terms and conditions to all implementers,
whether or not the implementers are W3C members. IBM will provide, upon
written request, a nonexclusive, royalty free license, with other
reasonable terms and conditions, for patents issued to IBM, which contain
essential XHTML+Voice Profile claims and for which IBM is able to provide
patent licenses, to all entities willing to grant IBM a reciprocal license.
IBM has identified patent applications (three which are published and three
which are unpublished) which, while not having claims essential to a
XHTML+Voice Profile implementation, may facilitate the implementation of
the XHTML+Voice Profile specification. IBM has determined that compliant
XHTML+Voice Profile implementations can be developed, which would not
require a license to these claims. IBM will provide nonexclusive,
non-discriminatory licenses under reasonable terms and conditions, in
accordance with IBM's normal licensing policies, should these claims be
employed in X+V implementations.
IBM has identified the following three published patent applications which
could provide facilitating XHTML+Voice Profile claims:
1) Published Patent Application: Conversational Browser and
Conversational Systems.
a. International Application Number: PCT/US99/23008, International
Published Number WO 00/21232
b. International Filing Date: October 1, 1999
c. Authors: Gopalakrishnan, Lucas, Maes, Nahamoo, Sedivy, Ward
2) Published Patent Application: Conversational Computing via
Conversational Virtual Machine.
a. International Application Number: PCT/US99/22927, International
Published Number WO 00/20962
b. International Filing Date: October 1, 1999
c. Authors: Coffman, Comerford, De Gennaro, Epstein, Gopalakrishnan,
Maes, Nahamoo
3) Published Patent Application: Method and Apparatus for Coupling a
Visual Browser to a Voice Browser
a. Published in Canada December 28, 2001; Application Number 2346606
filed May 7, 2001
b. Published in Germany January 17, 2002; Application Number 10125406.7
filed May 25, 2001
c. Authors: Lucas, Reich
IBM also believes that within its portfolio, there are currently three
identified unpublished patent applications, the claims of which may
facilitate potential implementations of a XHTML+Voice Profile
specification. IBM is unable to provide more specific information regarding
these unpublished patent applications, until such time as the patent
applications are either published or issued. (When and if the unpublished
patent applications become published or issued, IBM will be able to provide
this documentation to the W3C.)
As IBM better understands the evolution of the Multimodal Interaction
specifications, and should IBM personnel become aware of additional patents
or patent applications, essential or facilitating to the Multimodal
Interaction implementation, these patents or patent applications will be
communicated to the W3C.
Any party wishing to request a license to IBM patents in support of the
Multimodal X+V specification:
Should write to:
IBM Director of Licensing
IBM Corporation
North Castle Drive, Armonk, N.Y., 10504
Or
Should send a facsimile to:
IBM Director of Licensing
IBM Corporation
(914)-765-4420
--
Arnaud Le Hors - IBM, XML Standards Strategy Group / W3C AC Rep.

Motorola (with permission of Chuck Powers)

Revised Motorola IPR Statement to the Multimodal Interaction working group on the xHTML + VoiceXML v1.0 Profile
At this time, and without performing a detailed patent search, neither the Motorola W3C Advisory Council representative, nor the participants of Motorola, Inc. ("Motorola") in the W3C's Multimodal Interaction Working Group, are aware of any patents or pending applications which contain Essential Claims necessary to implement the "xHTML + VoiceXML v1.0 profile" ("x + V v1.0"), as submitted to the W3C by IBM, Motorola and Opera and acknowledged by the W3C on December 21, 2001, and based on the definition of Essential Claims as provided below, apart from those noted on our IPR statement regarding the "VoiceXML 2.0 deliverable".
In the future, if the implementation of "x + V v1.0" as part of a W3C Recommendation requires the use of Essential Claims of any Motorola patents, any company (W3C member or not) will be able to obtain a worldwide, nonexclusive license on royalty-free and other reasonable and non-discriminatory terms to those Essential Claims owned or controlled by Motorola essential to implement in products or services "x + V v1.0" as a part of that W3C Recommendation.
Motorola may also have patent claims which are not essential to the implementation of "x + V v1.0", but may facilitate the implementation of "x + V v1.0" as a part of a W3C Recommendation into products. In addition, Motorola has patent claims which may be essential to implement technical alternatives to "x + V v1.0" being considered in the Multimodal Interaction working group. In such cases, Motorola will provide nonexclusive, non-discriminatory licenses under reasonable terms and conditions, in accordance with Motorola's normal licensing policies, should these claims be employed in the implementation of a W3C Recommendation.
One precondition of any such license granted to a company ("licensee") shall be the licensee's agreement to grant a reciprocal worldwide, royalty-free, nonexclusive license to any Essential Claims owned or controlled by the licensee or its Affiliates ( its parent company or any company in which it or its parent company have more than 50% of the ownership or control), to Motorola necessary to implement in products or services any W3C Recommendation which incorporates "x + V v1.0". Motorola expressly reserves all other patents and intellectual property rights it may have, including the right to refuse to grant or terminate a royalty-free license to any company and its Affiliates if it or one of its Affiliates asserts a claim of infringement against Motorola's products or services that implement any W3C Recommendation.
We understand that under the W3C Current Patent Practice Note, a complete disclosure obligation response is expected by the time the Recommendation-track deliverable(s) enter Candidate Recommendation (or Proposed Recommendation if there is no Candidate Recommendation).
Definition of Essential Claims:
"Essential Claims" shall mean all claims in any patent or patent application with an effective filing date within one year and one day after the publication of the first Public Working Draft, in any jurisdiction in the world, that a Member (or a licensor or licensee, with reference to entities other than Members) owns, or under which a Member (or a licensor or licensee) has the right to grant licenses without obligation of payment or other consideration to an unrelated third party, that would necessarily and unavoidably be infringed in remaining compliant with the "xHTML + VoiceXML v1.0 Profile". A claim is necessarily and unavoidably infringed hereunder when there are no other possible implementations of the Recommendation that avoid infringing the claim, for technological rather than commercial reasons. Existence of a non-infringing alternative shall be judged based on the state-of-the-art at the time the specification becomes a Recommendation.
The following are expressly excluded from and shall not be deemed to constitute Essential Claims:
1) any claims other than as set forth above even if contained in the same patent as
Essential Claims; and
2) claims which would be infringed only by
- portions of an implementation that are optional or not necessary or required by
the Recommendation, or
- combinations of elements of the Recommendation; or
- enabling technologies that may be necessary to make or use any product or
portion thereof that complies with the Recommendation but are not themselves
expressly set forth in the Recommendation (e.g., semiconductor manufacturing
technology, compiler technology, object-oriented technology, basic operating
system technology, and the like); or
- the implementation of technology developed elsewhere and merely incorporated
by reference in the body of the Recommendation.
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"We live in a Darwinian world, and either we adapt to change or we get left behind. Those are the rules. So we had best get over it and then get on with it."
-- Geoffrey A. Moore, "Living on the Fault Line"
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Chuck Powers, Corporate Standards Offices
phone: 512-895-4594
mobile: 512-576-1698
2-way Pager: 1-800-759-8352 Pager Pin #: 119-0200
chuck.powers@motorola.com